Track III: Strategic IP Management

Transcription

1 Track III: Strategic IP Management STREAMLINING LEGAL OPERATIONS

2 Presenters L i z F o r t i e r General Counsel, Lucid P e t e r R e b u f f o n i Legal Process Manager, Schwegman

3 Operational Challenges faced by Corporate and Outside Counsel? Electronic Filing and PTO Communications AIA and First-to-File in the US Global IP Portfolios Client Data Security Evolving Case Law w/ Employee Agreements and Assignments

4 Effects of the switch to E-filing Despite USPTO closures, items can now be filed 24 hours a day / 7 days a week. Creates pressures on in-house counsel and outside law firms to be ever available and willing to file Document properties (type, size, naming convention, corruption, storage capacity) of greater importance Need for tools/programs to handle higher capacity filing and storage of documents Additionally, electronic correspondence received from patent office(s) require specialized procedures and capacity

5 Solutions to the demands of e -filing Identification and commitment to maintaining core business hours and communication of expectations to clients/employees Pool of after-hour paralegals/e-filers or on-call personnel to handle 11 th hour filings Electronic signature programs/electronic stamps for executing by multiple devices Automated scraping/docketing of USPTO correspondence

6 Demands of a First-to-File System Coupled with 24/7 electronic filing, FTF systems creates a heightened rush to the patent office Pressure on in-house patent departments to timely harvest invention disclosures and make decisions directing filings Unknown initially whether you beat the competition to the patent office Tracking unfiled application requires robust processes

7 Solutions to a First-to-File System Identification of client expectations regarding filing timeline Defined disclosure intake process and custom templates for docketing progress Reporting mechanism for unfiled cases so that cases facing filing delays can be reassigned as needed Identification of delays in application preparation and engaging client in discussions regarding progress or lack of progress Specialized personnel (meeting scheduler, docketing manager) to help facilitate disclosure meetings and draft preparation

8 The Rise of Global IP Portfolios Inventor nationality/residence can impact filing decisions Location where the invention was conceived becomes more important Filing strategies could revolve around inventor nationality / location instead of product or manufacturing decisions Foreign filing license / foreign filing first create new issues regarding export control and timing of filings

9 Handling Global IP Portfolios Process for identifying inventor nationality/location details early in the disclosure process (docket separately) Need access to details regarding first-to-file countries and filing requirements for specific technologies Maintain close relationships with foreign agents for queries/assistance with filing considerations Discuss filing strategies in view of foreign filing license/country law requirements early in the process

10 Data security: Ongoing Challenge to Keep Pace with Innovation and a Globalized Environment Restricting access to data within your company / law firm NDAs in place with any third party vendors Use of third party applications (Box, DropBox, etc.) to share documents with clients and export control / data security considerations GDPR and inventor/client data privacy

11 Managing Data Access & Security Systems with multiple access levels (matter-level, clientlevel, export restrictions) Identify all employees within your organization needing access and what level of access they should be given Engage third-party application providers in determining acceptable level of security/access Engage foreign agents to understand data security directives aimed at protecting inventor privacy

12 Evolving Employee Agreements & Assignments Use of employee agreements as the basis for filing in the name of the company (substitute statement, etc.) What s in the employee agreement (present tense language, agreement to assign all rights, including right to claim priority) Non-employee inventors Multiple assignees (joint research projects, etc.)

13 Streamlining assignments Define process for obtaining inventor signature and standardize steps necessary before proceeding without inventor signature Prioritize obtaining assignments on original applications and recording early Docket/track obtaining inventor signature and involve client legal departments/client contacts early for nonsigning inventors Leverage document signing software (DocuSign, etc.) to make it easy for inventors to sign and to speed up return time

14 Questions? L i z F o r t i e r efortier@luc.id P e t e r R e b u f f o n i prebuffoni@slwip.com